JNC CORPORATION et al.Download PDFPatent Trials and Appeals BoardSep 1, 20212020004526 (P.T.A.B. Sep. 1, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/222,964 07/29/2016 KAZUYUKI SAKAMOTO 38866-US-033-PCT-1 8297 31561 7590 09/01/2021 JCIPRNET 8F-1, No. 100, Roosevelt Rd. Sec. 2, Taipei, 100404 TAIWAN EXAMINER MCCULLOUGH, ERIC J. ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 09/01/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Belinda@JCIPGROUP.COM USA@JCIPGROUP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUYUKI SAKAMOTO, OSAMU KOJIMA, and OSAMU YAMAGUCHI Appeal 2020-004526 Application 15/222,964 Technology Center 1700 Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and LILAN REN, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s May 2, 2019 decision to finally reject claim 1 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Kazuyuki Sakamoto (the first named inventor), and JNC Corporation and JNC Petrochemical Corporation (the assignees of record) (Appeal Br. 1). Appeal 2020-004526 Application 15/222,964 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to a method for manufacturing a composite porous film for fluid separation (Abstract). A coating film of a silica precursor is formed on at least one side of a microporous film (id.). The film is then subjected to either heat or steam treatment to convert the silica precursor into SiO2 glass (id.). Claim 1, the only claim on appeal, is reproduced below from the Claims Appendix: 1. A method for manufacturing a composite porous film for fluid separation, wherein a coating film of a silica precursor is formed at least on one side of a microporous film including a fluoropolymer resin by coating treatment, and after removing a solvent of the silica precursor to form the coating film, applying at least one of treatment selected from heat treatment and steam treatment to convert the silica precursor into a SiO2 glass so that a deposition amount of the SiO2 glass is in a range of 0.6 to 8.0 g/m2, and thus a porous SiO2 glass layer is formed at least on one side of the microporous film, and a composite porous film coated with the porous SiO2 glass layer is obtained, wherein a mean pore diameter of the composite porous film for fluid separation is in a range of 5 to 500 nanometers, and the silica precursor is a polysilazane solution having a polysilazane concentration in a range of 5 to 20% by mass, and includes fillers selected from the group consisting of zinc oxide, titanium dioxide, barium titanate, barium carbonate, barium sulfate, zirconium oxide, zirconium silicate, alumina, magnesium oxide, and particulates of silicon carbide, silicon nitride and carbon. Appeal 2020-004526 Application 15/222,964 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Haluska et al. US 5,436,083 July 25, 1995 Mitani et al. US 2004/0182242 A1 September 23, 2004 Ramaswamy et al. US 2007/0125702 A1 June 7, 2007 REJECTION Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ramaswamy in view of Mitani and Haluska. OPINION The Examiner’s findings underlying the rejection are set forth at pages 4–8 of the Final Action. In particular the Examiner finds that Ramaswamy discloses a method of manufacturing a composite porous film for fluid separation where a silica layer is deposited on a microporous film of fluoropolymer resin (Final Act. 4–5, citing Ramaswamy ¶¶ 19, 26–30, 68). The Examiner also finds that Ramaswamy does not disclose forming the silica layer by (1) coating a film of a silica precursor on one side of a microporous film, and (2) after removing a solvent of the silica precursor to form the coating film, applying at least one treatment selected from heat treatment and steam treatment to convert the silica precursor into a SiO2 glass (Final Act. 5). The Examiner also finds that Ramaswamy does not teach that the polysilazane solution has a polysilazane concentration in a range of 5 to 20% by mass, and includes fillers selected from the group consisting of zinc oxide, titanium dioxide, barium titanate, barium carbonate, Appeal 2020-004526 Application 15/222,964 4 barium sulfate, zirconium oxide, zirconium silicate, alumina, magnesium oxide, and particulates of silicon carbide, silicon nitride, and carbon (id.). The Examiner further finds that Mitani discloses a method for manufacturing a membrane for fluid separation in which a coating film of a silica precursor solution is formed at least on one side of a supporting base by coating via immersion, and then hydrothermal treatment converts the silica precursor into a SiO2 glass (id., citing Mitani, Abstract, ¶¶ 67, 76, 77). The Examiner determines that it would have been obvious to use this method to form the silica layer of Ramaswamy’s system because that would be a simple substitution of one method known to form a silica film on a base membrane (id. at 5–6). Haluska is cited in the rejection for teaching that the following claim limitations were known in the art: (1) the concentration of the polysilazane; (2) drying the polysilazane solution before thermal treatment, and (3) using the claimed fillers (Ans. 8). The Examiner’s rationale for combining these teachings with those of Ramaswamy and Mitani is that doing so involves only using a known technique of coating a silazane film to a base substrate prior to hydrothermal treatment to form silica (Final Act. 6–7). Appellant argues, inter alia, that a person of skill in the art would not have combined the teachings of Haluska with those of Ramaswamy and Mitani because Haluska discloses a protective coating which can be pore- free, while both Ramaswamy and Mitani relate to porous, filter-like systems (Appeal Br. 5–6). The specific passage of Haluska relied upon by Appellant reads as follows: The present invention is based on the discovery that desirable protective coatings can be formed on electronic substrates from a composition comprising a polysilazane and a filler. Coatings Appeal 2020-004526 Application 15/222,964 5 derived therefrom are thicker (eg., >40 micrometers) than those derived from polysilazanes (eg., <2 micrometers), they can have a variety of electrical properties depending on the filler and they can be crack and pore-free. (Haluska, 1:49–56, emphasis added). The first issue for this appeal is whether Appellant has identified reversible error in the Examiner’s rationale for combining Haluska and Ramaswamy. Appellant argues that a person of skill in the art would not have used Haluska’s teachings to modify Ramaswamy’s system because Haluska teaches that its silica coating is pore-free and thus would be incompatible with Ramaswamy’s system, which is used, in part, for membrane structures used in filtration applications (Ramaswamy ¶ 3). After reviewing the evidence of record, Appellant’s arguments as set forth in the Appeal Brief and the Reply Brief, and the Examiner’s position as set forth in the Final Action and the Answer, we determine that the evidence of record does not support Appellant’s position and we affirm the rejection on appeal, essentially for the reasons set forth by the Examiner. We add the following for emphasis. Appellant’s argument rests on a contention that Haluska teaches a non-porous silica coating. Appellant argues that Haluska teaches pore-free coatings because Haluska states that (a) its coating can be pore-free, and (b) its coating is a protective coating for electronic components, which means that Haluska intends for its coatings to be pore-free (Appeal Br. 5; Reply Br. 2). According to Appellant, because a person of skill in the art would have understood that even trace amounts of impurities such as water, organic or inorganic fluids (gas or liquid), particles of any size, etc., can result in damage to the underlying components, a person of skill in the art Appeal 2020-004526 Application 15/222,964 6 would have understood Haluska to want its coating to be pore-free (Reply Br. 2). However, Haluska does not require its coatings to be free of cracks and pores – only that the coating may have such attributes. (Haluska, 1:49– 56). Moreover, Mitani discloses that thermal treatment of polysilazane solutions produces a porous silica membrane (Mitani, ¶¶ 67, 76, and 77). The rejection relies on Haluska as teaching one of skill in the art known ranges of polysilazane solution concentrations used for a film formed from thermal treatment of a polysilazane solution into a film, as well as the inclusion of fillers (i.e., to increase thickness) and that it is known to dry (i.e., remove solvent from) the polysilazane solution before firing. These features are not specifically described as influencing the porosity of the resulting membrane. Thus, the evidence supports the Examiner’s finding that a person of skill in the art would have had a reason to combine the cited teachings of Haluska with those of Ramaswamy and Mitani. That Haluska might wish to minimize the porosity of its coatings would not have prevented a person of skill in the art from relying on some of its teachings, particularly in view of the fact that Haluska teaches that its coating can be pore-free, not that it is pore-free. Moreover, to the extent that Appellant argues that data in the Specification suggests that pore size can be affected by polysilazane concentration (Appeal Br. 8–9), even if true and known to a person of skill in the art at the time of the invention, that fact would not have prevented a person of skill in the art from using the teachings of Haluska with Ramaswamy’s system. Appeal 2020-004526 Application 15/222,964 7 Appellant also argues that Haluska’s concentration range for the polysilazane is so broad that it cannot render obvious the claimed 5–20% by mass concentration (Appeal Br. 9). This argument is not persuasive because, as explained by the Examiner (Ans. 10), the claimed range is completely encompassed by Haluska’s disclosed range (5–20% versus 1–50%), such that a person of skill in the art could have arrived at the claimed range through routine experimentation. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). A prima facie case of obviousness exists in situations where the claimed ranges overlap the ranges disclosed by the prior art. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellant also alludes to a showing of unexpected results (Appeal Br. 9–10), but the alleged showing is not sufficient to demonstrate non- obviousness in view of the overlapping range described above. In particular, Appellant has not shown unexpected results achieved at concentrations of 5% or 20% (for example, by comparison with concentrations of 4% or 21%), nor is the showing commensurate with the scope of the claims (see, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). Finally, Appellant contends that the Examiner has not adequately established that the prior art renders obvious the claimed silica deposition amount (0.6 to 8.0 g/m2). The Examiner finds that the thickness of Ramaswamy’s silica layer overlaps with the thickness of the claimed silica layer, so that the amounts of silica would also be expected to overlap (Final Act. 7). The Examiner also finds, in the alternative, that the silica deposition Appeal 2020-004526 Application 15/222,964 8 amount is a result effective variable such that optimizing it to the claimed amount would have been obvious to a person of skill in the art (Final Act. 7–8). Appellant does not challenge this latter rationale (see Appeal Br. 10– 11; Reply Br. 5–6) and, therefore, does not show reversible error in it. Therefore, for the foregoing reasons, we affirm the rejection of claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103(a) Ramaswamy, Mitani, Haluska 1 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation